The Constitutionality of the Bootleg Statute

A general note about posting comments: the default was, unknown to me, set to require a registered account. I have changed it so anyone can post a comment. I encourage all comments and I hope this posting will generate more than a few.

While I am a full-time litigator in private practice, I have a keen interest in statutory interpretation, having spent eight years as a copyright attorney in the federal legislative branch, including a stint as copyright counsel to the U.S. House of Representatives IP subcommittee. I have drafted a fair number of bills, including quite a few that became law. Three that became law were included in the 1994 GATT implementing legislation. Two of those three concern the unauthorized fixation, transmission, or subsequent sale of unauthorized live musical performances. (The third is the 104A restoration section in the same legislation). This posting concerns the bootleg provisions.

There is a civil provision in 17 USC 1100 and a criminal provision in 28 USC 2319A. The heart of both provisions is the same: a violation occurs when, without the permission of the performer(s) someone engages in: (1) a fixation of a live musical performance, or (2) a transmission of such a performance to the public, or (3) a distribution in copies or phonorecords of (1).

These provisions were inserted into the GATT legislation to comply with TRIPS obligations (Article 14(a)), but the means of compliance as well as the details were a matter of U.S. law. Hayden Gregory (the subcommittee's outstanding chief counsel) and I spent alot of time hashing out the best way to draft appropriate legislation. We carefully and conscientiously reviewed the constitutional issues of legislating under the Copyright Clause or the Commerce Clause. We consulted with the Justice Department's Office of Legislative Counsel, the Copyright Office, RIAA, and academics. Our decision was motivated by the need to comply with a treaty obligation and what we believed the best public policy to be. We were, though, open to other ideas and to criticism.

To get such ideas and criticism, the House IP subcommittee then held a joint public hearing with the Senate IP subcommittee in August 1994. The hearing was particularly noteworthy because both the Office of United States Trade Representative (which had general responsibility for drafting the GATT legislation on behalf of the Administration) and the private sector did not want a hearing on the legislation, nor did they want drafts of the Administration's version of the IP parts of the legislation circulated to the public at large. Bear in mind that this was fast track legislation, meaning it could not be amended after introduction. What was introduced would be what passed: if you couldn't see it before introduction, you had no way demanding changes. My experience with USTR's heavy-handed conduct convinced me that no President should have fast track authority.

By holding a hearing, and also by persuading Senator DeConcini to "out" the Administration's draft by introducing it as a bill and placing it in the Congressional Record, we struck a blow for open government. I mention this because we believed it important to provide those wishing to challenge particular provisions to be heard before introduction so that necessary changes could be made.

Witnesses at the hearing included government officials, private sector representatives, and academics. At my request, two law professors, one quite prominent testified. While they testified at length on perceived constitutional problems with Section 104A, neither they nor anyone else expressed any problems with the bootleg provisions. (One of the two recently signed on to a professors brief discussed below.) The record was held open after the hearing to receive written comments. There were none on the bootleg provisions.

Given the opportunity we provided anyone to comment on the proposals, it surprising to learn that some who were there, but silent, are now critics. Academics seem particularly prone to public choice theory, perhaps in direct relationship to their lack of real knowledge about or participation in the political process. It is one thing to subscribe to that theory when you are excluded from participating in the process, but it is quite another when you are invited to participate and don't. Those who constantly whine about the effect of the private sector on copyright legislation should look at themselves and ask why, when they had a genuine chance in 1994 to influence legislation so allegedly flawed, they didn't.

I have dealt with the details of the bootleg statutes in a 1994 book published by BNA ("Copyright and the GATT"); this posting only concerns the three court opinions issued since then, United States v. Moghadam, 175 F.3d 1269 (11th Cir. 1999); United States v. Martignon, 346 F. Supp.2d 413 (SDNY 2004); and, Kiss Catalog v. Passport Int'l Prods., 350 F. Supp. 823 (CDCAL 2004). As the captions reveal, the first two are criminal, the last civil.

The legislation was enacted deliberately under Congress's Commerce Clause powers. We did so because of doubt that an unfixed performance was a writing and therefore encompassed by Congress's Copyright Clause power. Evidence of legislating under the Commerce Clause is seen in Section 1101(a), which states that a violator of the right "shall be subject to the remedies provided in sections 502 through 505 to the same extent as an infringer of copyright." Obviously, if we had regarded the right as a "copyright" right (in the broadest sense), the italicized language would have been unnecessary, even wrong. Second, we made the right perpetual, both because we saw no need to limit it and as another obvious sign that we weren't legislating under the Copyright Clause.

In 1994, I had been practicing copyright law for 13 years. I was well aware of the limited Times restriction. Everyone involved was aware of it. Do critics think that in making the bootleg right perpetual we meant to legislate under the Copyright Clause but just had a memory lapse, or that we said, "Hell, let's draft an unconstitutional provision; why not, its bound to be fun?" The answer is, no, we didn't draft a copyright or copyright-like provision at all. We drafted a sui generis right under the Commerce Clause. (For those who are wondering, Congress is not in the habit of saying in a statute, "hey this is the power we are legislating under." See also Woods v. Taylor, 333 U.S. 138 (1948)).

Why then did we place the bootleg provision in title 17? For ease of use of definitions and other administrative parts of that title. We did not put it in the Copyright Act. That Act constitutes only chapters 1-8 of title 17. Instead, we put the bootleg provisions in a new chapter 11, in the sui generis outposts of title 17, which begin with chapter 9, another sign of their non-copyright nature. The placement in title 17 has no substantive meaning at all. Congress could put a bill on the interstate commerce regulation of GPS chips in dogs in title 17 if it wanted to, but that wouldn't make the provision a copyright provision. We could have put the bootleg provisions in title 15 (in fact we did put them in title 15 in an early draft, but we took them out after trademark owners complained), or we could have put them in no part of the USC at all, just made them a freestanding Act; neither decision would have had any impact on the substantive nature of the right.

Moghadam upheld the law as a valid exercise of Commerce Clause power, but it was dead wrong in saying "Congress thought it was acting under the Copyright Clause." 175 F.3d at 1275. The court didn't say why we supposedly thought that, and we most definitely didn't. Before a court makes a statement like that, it should back it up, if it can, and Moghadam didn't. Inconsistently, Moghadam thought that live musical performances weren't writings. If so, why did the court think we were legislating under the Copyright Clause? I find this particularly annoying because the writing issue was the very reason we decided to legislate under the Commerce Clause. The court's inability to grasp the structure of title 17 or even the import of something so simple as the reference in the remedies part of "to the same extent as an infringer of copyright" is disappointing, but then courts know very little about legislation. (What they lack in knowledge they make up in imagination).

Judge Baer's Martignon opinion is quite another story. If one were to grade judicial opinions, Moghadam would get a C- and Martignon would get an "F" (and that applies also to the two law students who apparently drafted the opinion, see 346 F. Supp.2d at 416 n.1). First, Judge Baer gave substantive significance to the placement of the provision in title 17, a fundamental error. And more: the placement in title 17 was deemed by Judge Baer to support the view that the statute is one "directed at protecting the interests of artists, rather than commerce, and therefore further sustains the view that the statute is copyright-like in nature." Id. at 422. Geez, I thought that artists were engaged in interstate commerce, especially live musical performers who go on tour throughout the country and have their performances taped while engaged in such commerce; you know, the very ones the bootleg provisions try to protect. Perhaps performers are like baseball players, but if so they should enjoy the same antitrust exemption.

Judge Baer's next noteworthy error (there are too many to detail in any blog, regardless of size) was his belief that the bootleg provision was both not a copyright provision -- because it did not protect writings -- and a copyright provision because the rights were copyright-like. This confuses subject matter with rights. Even Section 301, the preemption provision in title 17, doesn't make that error: states can grant identical exclusive rights to those granted in Section 106 and 106A so long as the subject matter is not the same. (Conversely, states can grant non-equivalent rights in copyright subject matter.) The subject matter of the bootleg provisions is not the same as those protected by the Copyright Act; it can't be, there is no writing. Judge Baer's collapsing of non-copyright material into copyright material is a fundamental error.

His dormant Copyright Clause argument misses the whole point: "Congress may not .. enact copyright or copyright-like legislation, which conflicts with the fixation or durational limitations of the Copyright Clause, even if another clause provides the basis for such power because Congress' power to enact copyright or copyright-like legislation... is only as broad as the Copyright Clause allows." Id. at 426-427. The reach of the Copyright Clause stops at the fixation door: it doesn't expressly or impliedly swing open to things that aren't fixed.

This fixation on fixation is also seen in a brief submitted on May 12th by a number of law professors in support of the hapless Judge Baer on appeal, (Law Professors' Brief). The brief makes a number of points. I focus on one: The professors assert that the bootleg provisions are copyright rights because they criminalize (in the case of 2319A) or find infringing (in the case of 1101) fixation of live musical performances in copies or phonorecords. The professors need to brush up on a few fundamentals. One is the distinction between a material object and any intellectual property embodied therein (17 USC 202). The material object is not the intellectual property. The professors err by saying that the subject matter of the bootleg provision is the copy. Its not: the live musical performance is the live musical performance; the copy of the phonorecord in which an individual captures an unauthorized fixation of the performance does not become the live musical performance; the copy remains just a piece of tape or another storage medium.

I note too that the definition of "fixed" in Section 101 is limited to authorized fixations; thus Section 1101 falls outside of the Copyright Act on that ground too. I also note that Section 301 saves from preemption other federal statutes. Moreover, the "transmission right" in the bootleg provision does not require any fixation: does this mean that provision is constitutionally OK?

The Seventh Circuit originally made the same error as the professors in its first Toney v. L'Oreal opinion, discussed in an earlier posting. The panel then reversed, correctly holding that a photograph which served as the fixation for a model's image was not the subject matter for purposes of preemption of state right of publicity laws. The model's image was still her image, regardless of how her right of publicity was violated. Under the law professor's approach, right of publicity laws must be struck down too (under the complete preemption doctrine), even though the Supreme Court upheld them in the Zacchini case. So too all state laws on purely oral works, despite the lack of statutory preemption for them.

The dormant Copyright Clause argument only extends to material that is either subject to copyright, was under copyright, or which conflicts with a clear objective of the Copyright Clause having to do with the operation of that Clause. Live musical performances, having nothing to do with that clause, are not affected.